Here are a few recommendations for making the most of a TTAB discovery conference:
- Encourage open communications. Far too often, attorneys are quite terse during the discovery conference. Engaging in a…
- Be respectful. Have the other party articulate its interests in defending or opposing a trademark application. This will…
- Prepare for settlement. Discuss with your c…
How long does the discovery phase last in a TTAB case?
In the TTAB standard order, the discovery phase is limited to 180 days, unless extended by the parties. In general, the TTAB will grant requests for extension, even repeated requests. Discovery in the TTAB is governed by the FRCP, unless a specific TTAB rule applies.
How do you prepare for a discovery Conference?
Prepare a Thorough Discovery Plan. Attorneys must be well-informed of their case prior to the conference. The more informed attorneys are, the more capable they will be to address relevant issues and streamline the discovery process, which can undoubtedly be done by preparing a thoughtful discovery plan.
What does the TTAB do after filing a case?
Upon the filing of a case, the TTAB serves the initial pleading on the defendant. At the same time, the TTAB issues a standard case management order setting the schedule and deadlines for pleadings, conferences, discovery, disclosures, and trial.
What information is provided in the initial disclosures of a TTAB?
The information provided in the initial disclosures is also different in a TTAB proceeding. Because damages are not an issue in TTAB proceedings, initial disclosures are limited to the names, addresses, and locations of potential witnesses and descriptions and locations of documents to be produced under FRCP 26 (a) (1) (A) (i) and (ii).
What do you talk about at TTAB Discovery Conference?
The discovery conference topics include:claims and defenses of the TTAB case;possibility of settlement;plans for disclosures and discovery; and.any changes to the TTAB’s standard protective order.
Are initial disclosures filed with TTAB?
In a trademark opposition or cancellation at the Trademark Trial and Appeal Board (TTAB), one of the elements of the first stages of the proceeding is “initial disclosures” from the parties. “information that the disclosing party may use to support its claims or defenses.”
How long does a TTAB appeal take?
When can I expect a final decision on my appeal? Presently, the TTAB is rendering decisions in ex-parte appeals approximately 10 weeks after all briefs have been submitted or after a hearing date.
How does a TTAB trial work?
Instead, an opposition trial is conducted through “testimony periods” as follows: (1) the Opposer has a 30- day testimony period in which to submit its trial evidence; (2) the Applicant then has a 30-day testimony period to submit its evidence; and (3) the Opposer has a 15-day testimony period to submit rebuttal …
What subjects should be covered during Discovery Conference?
Before discovery can occur in a TTAB trademark opposition or cancellation proceeding, attorneys for both sides must conduct a mandatory discovery conference to discuss the subjects identified in Rule 26 (f) of the Federal Rules of Civil Procedure, including [see TBMP Section 401.01 ]:
What happens after the Discovery Conference?
This means that either side may propound discovery requests starting from the “Discovery Opens” date as long as that party serves its Initial Disclosures, which will not be due until 30 days after the opening discovery date.
What if a party fails to attend the Discovery Conference?
If a party fails to attend the discovery conference, the other (complying) party may file a motion to compel which will lead to the Board issuing an order to compel the non-complying party to attend the conference. Subsequent failure to comply with the order and attend the conference could lead to sanctions, judgment against the non-complying party (see Shanghai QianQu Stationery Co. Lrd. v. Each Bit Trade LLC ).
How long does it take to respond to a discovery request?
Responses to written discovery requests (i.e., interrogatories, RFA’s, requests for production of documents) must be served within 30 days from the date of service of such discovery requests without tacking on the old 5-day extension.
How long does a conference have to be after the answer is due?
The conference must occur within 30 days after the answer is due. The parties do not file any discovery plans with the TTAB.
When does the trademark modernization act go into effect?
When does the Trademark Modernization Act go into effect? – November 17, 2021
What Is the Discovery Conference?
A cancellation proceeding begins when the petitioner files a Petition for Cancellation against one or more active registrations. An opposition is similarly commenced when an opposer files a Notice of Opposition against a pending application (which must occur during the publication period or after an extension of time to oppose has been filed).
What Must the Parties Discuss?
There are a number of issues that should be addressed in the discovery conference. However, they do not necessarily have to be given equal weight or time. Depending on the nature of the dispute, some topics will naturally make more sense to focus on than others. Here are the things that the TTAB says must be discussed:
What Happens Next?
After the discovery conference, the process (whether for cancellation or opposition) will continue with the opening of discovery and sharing of initial disclosures. From here, things will really ramp up. Discovery is often lengthy and time consuming.
When Must the Discovery Conference Be Held?
The deadline is typically 30 days from the date on which the defendant must file its answer to the notice of opposition . If the parties mutually agree to extend the deadline for filing the answer, then the deadline for having the discovery conference is also extended. If the defendant fails to file an answer by the original or extended deadline, the obligation to hold the discovery conference is effectively stayed (put on hold). In the event the defendant still doesn’t file an answer after the TTAB issues the notice of default, the TTAB will sustain the opposition in favor of the opposer and the defendant’s trademark application will go abandoned.
What Happens After the Discovery Conference?
If both parties are interested in exploring settlement of the opposition, they will frequently agree to suspend the opposition for a period of time so that they can engage in settlement negotiations without worrying about other upcoming opposition deadlines. On the other hand, if it’s clear that an amicable resolution to the opposition is unlikely to be reached at this early stage of the proceeding, then the opposition will simply continue and the parties will need to exchange initial disclosures within about 30 days after the deadline for holding the discovery conference.
What are the Requirements?
At a minimum, the parties are required to discuss the following topics during the discovery conference:
What is discovery conference in trademark opposition?
What is the Discovery Conference in a Trademark Opposition? The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period.
Does the TTAB participate in discovery conferences?
Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.
What is the requirement for discovery plans?
Rule 26 (f) (3) requires discovery plans to contain the following: any changes to the timing, form, or requirement for disclosures under Rule 26 (a), including a statement of when initial disclosures were made or will be made; the subjects on which discovery may be needed, when discovery should be completed, and whether discovery should be …
What are the consequences of a Rule 26 F conference?
Many attorneys view Rule 26 (f) conferences as a perfunctory obligation; however, the consequences of a poorly conducted Rule 26 (f) conference can lead to costly discovery headaches, even costlier remedies, and possible sanctions. These risks can be mitigated, if not avoided, by a well-implemented and well-planned Rule 26 (f) strategy.
What are the disclosure requirements for a TTAB?
Otherwise, parties are required to disclose all of the witnesses, documents, and things that contain discoverable information that the disclosing party may use to support its claims or defenses unless that information is being used solely for impeachment.  Expert witnesses must now be disclosed in the same manner as required under Federal Rule 26 (a) (2).  The one modification to the rule with experts is that, if a party retains an expert after the deadline for expert disclosure, they can file a motion with the Board to make use of that expert. It is then in the Board’s discretion to make a motion regarding that testimony and to set a deadline for any rebuttal expert.  Finally, the requirements for pre-trial disclosure are somewhat reduced. The requirements are solely that 15 days before each party’s testimony period, they must disclose witnesses who are expected to or may testify by affidavit in addition to witnesses who are expected to or may testify by giving oral testimony.
What to keep in mind during testimony period?
The most important thing to keep in mind during the testimony period is that if you want the Board to consider any fact, you must submit it in an approved format during this period. Evidence that is not submitted or is improperly submitted simply will not be considered. Accordingly, an understanding of both discovery and …
How many days before testimony do you have to disclose witnesses?
The requirements are solely that 15 days before each party’s testimony period, they must disclose witnesses who are expected to or may testify by affidavit in addition to witnesses who are expected to or may testify by giving oral testimony.
What is the testimony period?
The testimony period is the only period during which parties can present evidence that the Board will base its decision on. Accordingly, it is essential that any party to either an opposition or a cancellation proceeding be aware of how this period functions and how evidence needs to be submitted to the Board.
How long does a plaintiff have to testify in a trial?
Specifically, the Plaintiff will have a 30-day period to present its case in chief, after this, the defendant will have 30-days to present its case and the plaintiff will finally have 15 days to present any rebuttal evidence.  There is a 30-day interval between each testimony period.  The Board will base its decision solely upon the evidence submitted to it during the testimony period.  The dates for the testimony period can be rescheduled by stipulation of the parties or upon motion granted by the Board, however, without a stipulation or Board order the testimony period can be unrecoverable and result in the case being reviewed without sufficient evidence on the record. 
Can you submit evidence that is not an official record?
Evidence that is not an official record or a public record may still be submitted, but only through the testimony of a person who can properly authenticate and identify the materials. In particular, this is the only means with which to submit internet evidence and the like. 
Can a waiver be used in an alternative discovery plan?
The ability to waive has extended to the point that, in one case, the Board stated that while it is preferred that the parties then disclose an alternative discovery plan, in the absence of one, the Board will still accept the waiver and assume the parties plan to utilize traditional discovery devices as a substitute. 
What is TTAB conference?
A TTAB discovery conference among trademark attorneys to discuss discovery calendars, stipulations, and a possible settlement agreement is schedule d shortly after an answer is filed. The discovery process first involves each party serving initial disclosures to the other in accordance with the Federal Rules of Civil Procedure and as set out in the Trademark Trial and Appeal Board Manual of Procedure.
What is a TTAB decision?
In either situation, including if you need to file an answer in the TTAB, it is imperative that you adhere to the deadlines and other requirements of the process set out by the TTAB. Many TTAB decisions are defaults because an answer is not filed.
How long does a trademark defense take?
First, the party opposing the trademark will submit pretrial disclosures, witness testimony, documents, and other supporting evidence during its 30-day testimony period. Then, the applicant has a 30-day testimony period to submit evidence in its defense. Finally the opposer has a final 15-day period to rebut.
Why are TTAB decisions defaults?
Many TTAB decisions are defaults because an answer is not filed.
What happens after the opposing party receives all testimony?
After receiving all testimony, the opposer must file its Trial Brief to the Board, followed by the applicant’s brief, and then followed again by the opposer’s rebuttal brief.
How long does it take to uphold a trademark?
After examining the written record and oral arguments (if applicable), the TTAB usually takes about six months to issue its written decision on whether to uphold the trademark. There are additional deadlines and procedures that the losing party must follow if it wishes to file an appeal of the decision.
How long does it take to respond to a trademark complaint?
After approximately 40 days have passed from receiving notice of the complaint, the trademark applicant or owner must file a response—an answer—refuting the claims in the complaint. Failing to file an answer means that the applicant risks losing the trademark registration in a default judgment.
What are the methods of discovery?
The principal methods of discovery are (1) requests for admission; (2) request for documents; (3) interrogatories; (4) oral depostions; and (5) depositions upon written questions. The Federal Rules of Civil Procedure apply to Board Proceedings. However, if the Board has its own rule concerning a particular discovery matter, …
What is discovery in trademark court?
If you are a party in a Trademark Trial and Appeal Board (“Board”) Proceeding, you will participate in the discovery process. This process serves the same purpose as it would in federal or state court. Discovery permits parties to obtain facts, ascertain the identity of relevant witnesses, and obtain documents. The principal methods of discovery are (1) requests for admission; (2) request for documents; (3) interrogatories; (4) oral depostions; and (5) depositions upon written questions. The Federal Rules of Civil Procedure apply to Board Proceedings. However, if the Board has its own rule concerning a particular discovery matter, then that rule will govern. The Trademark Rules of Practice (“Trademark Rules”) are set forth in Title 37 of the Code of Federal Regulations.
How long is the discovery period?
The discovery phase is restricted to six months. Written requests for discovery can be served up to the last day of the 180 day period even though the response will be due after the close of the six month period. Initial disclosures must be made no later than thirty days after the opening of the discovery period.
What is a motion to compel discovery?
Another type of motion that can be filed is a motion to determine the sufficiency of an answer or objection to a request for an admission.
How long after discovery period do you have to make a disclosure?
Initial disclosures must be made no later than thirty days after the opening of the discovery period. There are strategic benefits to serving your written demands early in the discovery phase. This will allow you plenty of time to review your adversary’s responses, prior to taking discovery depostions.
What is the inclination in the discovery phase?
There is an inclination in the discovery phase to request broad information since discovery is governed by the liberal rules of Federal Rules of Civil Procedure. Essentially, under FRCP 26 (b) (1) a party may obtain discovery regarding any matter, not privileged that is relevant to the claim or to the defense.
What are trademark rules?
The Trademark Rules of Practice (“Trademark Rules”) are set forth in Title 37 of the Code of Federal Regulations. As part of the discovery process, the parties will participate in a discovery conference. This is typically scheduled via telephone conference. the parties must consider the claims and defenses and whether there is a possibility …
What is a TTAB discovery?
The traditional types of discovery (document requests, interrogatories, requests for admission, and depositions) are all available in a TTAB proceeding, with some variations. For example, the TTAB allows 75 interrogatories (including subparts) and 75 requests for admission, while the FRCP only allows 25 interrogatories and an unlimited number of admission requests.
What is the difference between discovery and TTAB?
Another difference between discovery in TTAB cases and federal or state court proceedings is that depositions of foreign parties or their representatives may be taken only upon written questions unless the parties agree to an oral deposition, or the TTAB grants a party’s motion upon a showing of good cause.
What is TTAB in trademarks?
The TTAB only has authority to decide whether a trademark application should be granted and the trademark registered, and whether a registration should be maintained or cancelled.
What are the rules of practice in TTAB?
A TTAB proceeding is governed by the Lanham Trademark Act of 1946, as amended, (Trademark Act), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice) may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (C.F.R.); and the rules relating to the conduct of practitioners and the representation of others before the USPTO may be found in Part 11 of 37 C.F.R. and the Trademark Trial and Appeal Board Manual of Procedure. The USPTO rules governing procedure in inter partes proceedings before the TTAB are adapted, in large part, from the FRCP, with modifications due primarily to the administrative nature of the TTAB proceedings.
What information is provided in initial disclosures?
Because damages are not an issue in TTAB proceedings, initial disclosures are limited to the names, addresses, and locations of potential witnesses and descriptions and locations of documents to be produced under FRCP 26 (a) (1) (A) (i) and (ii). No disclosures regarding potential damages or insurance coverage are required due to the TTAB’s inability to award damages.
When to take care of documentary evidence in TTAB?
Care must be taken early in the discovery period to determine what documents will be needed in the trial, and how to properly introduce the evidence. There are three principal ways of introducing documentary evidence in a TTAB proceeding:
Where are trademark disputes heard?
Trademark disputes may be heard in different forums: state courts, federal courts, and the Trademark Trial and Appeal Board (TTAB). Most disputes are heard in federal court, but many are brought before the TTAB, an administrative agency within the U.S. Patent and Trademark Office (USPTO).
What Subjects Should Be Covered During A Ttab Discovery Conference?
In a TTAB trademark opposition or cancellation proceeding, attorneys for both sides must conduct a mandatory discovery conference early on. This early meeting between the parties must take place before discovery can begin. In a sense, the discovery conference helps put the brakes on a trademark case before more activities, and legal bills, start to…
What Are Current Ttab Rules For Disclosures and Discovery?
Instead of waiting until the discovery closing date to serve discovery requests, all discovery requests must be served early enough such that responses would be due by the close of discovery. Here are TTAB discovery limits: 1. Document requests, including subparts, are capped at 75. 2. Requests for admissions (RFA) are limited to 75. 3. Interrogatories remain limited to 75…
What If A Party Fails to Attend The Discovery Conference?
If a party fails to attend the discovery conference, the other (complying) party may file a motion to compel. As a result, the Board will issue an order to compel the non-complying party to attend the conference. Subsequent failure to comply with the order and attend the conference could lead to sanctions, such as judgment against the non-complying party (see Shanghai QianQu Stationery …
What Happens After The Discovery Conference?
If settlement is a realistic option, the parties may consent to suspend the proceedings for one or months to continue discussing settlement. Otherwise, the deadline for the discovery conference is also the date that discovery opens. Either side may propound discovery requests starting from the “Discovery Opens” date as long as that party serves its Initial Disclosures.
Need to Defend A Trademark Opposition Or Trademark Cancellation?
Reach out to patent and trademark attorney Vic Lin at email@example.com or call (949) 223-9623to see how we can help you navigate through a trademark opposition or cancellation.
When Must The Discovery Conference Be held?
What Are The Requirements?
At a minimum, the parties are required to discuss the following topics during the discovery conference: 1. The nature and basis of their claims and defenses 2. The possibility of narrowing the scope of their claims and defenses 3. The possibility of settling the opposition in its entirety 4. Preserving discoverable information and materials 5. Arra…
What Happens After The Discovery Conference?
Usually one of two things happens after the discovery conference. If both parties are interested in exploring settlement of the opposition, they will frequently agree to suspend the opposition for a period of time so that they can engage in settlement negotiations without worrying about other upcoming opposition deadlines. On the other hand, if it’s clear that an amicable resolution to th…
Do You Need Assistance with The Discovery Conference?
I’m experienced US trademark attorney Morris Turek. If you’re involved in a trademark opposition and it’s time to hold the discovery conference, you may want to seek professional legal counsel to speak on your behalf and to discuss with the other party the potential for settling and/or abbreviating the opposition. You can reach me at (314) 749-4059, via email at morris@yourtrade…